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Obviously Prima Facie Case Overcome by Secondary Considerations

by Benjamin Ediger, Ph.D. | Jun 15, 2023 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, holding that the Board did not err in finding certain challenged claims nonobvious and not unpatentable based on a showing of several objective criteria of nonobviousness and a nexus of the evidence to a commercial product embodying the claimed invention. Medtronic, Inc. v. Teleflex Innovations S.A.R.L., Case No. 21-2357 (Fed. Cir. June 05, 2023) (Moore, C.J.; Lourie, Dyk, JJ.) and Medtronic, Inc. v. Teleflex Innovations S.A.R.L., Case No. 21-2359 (Fed. Cir. June 05, 2023) (Moore, C.J.; Lourie, Dyk, JJ.)

Teleflex developed and patented a novel catheter-based stenosis intervention system that successfully mitigated long-standing risks intrinsic to existing catheter-based intervention systems, in particular damage to the coronary artery from guide catheter dislodgement or a catheter’s distal tip (i.e., the end of the catheter farthest from the insertion site). The preferred embodiments incorporated into Teleflex’s extremely successful GuideLiner products comprised a proximal substantially rigid portion (yellow), a reinforced portion (blue) and a distal flexible tip (pink), as illustrated below.

The catheters were sized so they could be inserted through standard guide catheters and thus were coined guide extension catheters. This innovative nesting feature increased guide catheter backup support while the guide extension catheter’s soft distal end was less likely to cause tissue damage once deeply inserted into patients. Teleflex’s guide extension catheters also were optimized for receiving interventional cardiological devices. This optimized function was a combination of the catheter’s coaxial lumen, that lumen’s diameter being no more than one French (i.e., 1/3 mm) less than the diameter of the guide catheter, and a proximal side opening that featured a double incline design like that illustrated above.

Teleflex’s GuideLiner was introduced in 2009 and enjoyed “undisputed commercial success and industry praise.” In 2019, Medtronic introduced its competing guide extension catheter (Telescope) and filed six inter partes review (IPR) petitions against Teleflex’s extension guide catheter family. Three of Medtronic’s petitions asserted that the challenged claims in three of Teleflex’s patents were obvious over the evacuation sheath assembly with a distal side opening used to aspirate embolic material while occluding blood flow using sealing balloons disclosed in a prior art reference (Ressemann). The other three petitions challenged claims of the other Teleflex patents as being obvious over a support catheter for delivering angioplasty balloons disclosed in a prior art reference (Kontos).

Medtronic specifically asserted that the following three elements of Teleflex’s claimed catheters were obvious:

A proximal side opening. Medtronic argued that it would have been obvious to replace the proximal funnel structure of Kontos’s support catheter with the distal side opening of Ressemann’s evacuation sheath assembly.
A catheter diameter that is no more than one French less than a corresponding guide catheter. Medtronic argued that in view of prior art mother-and-child dual catheter systems in which the child catheter’s diameter is no [...]

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PTO Seeks Comments on Strategies to Address Counterfeiting and Piracy

by Amol Parikh | Jun 8, 2023 | Uncategorized

On May 25, 2023, the US Patent & Trademark Office (PTO) requested comments on strategies to address counterfeiting and piracy. The PTO requested information on current anti-counterfeiting and anti-piracy strategies that have proven effective, as well as ideas for future strategies.

The PTO requested comments on the 14 points listed below. Respondents may address any, all or none of these points. The PTO will receive any input relevant to future strategies in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers.

1. Current anti-counterfeiting and anti-piracy strategies, and any trends in how often such practices guide plans for addressing these issues in the future.

2. The types of harms observed from sales of counterfeited and pirated goods.

3. How to educate consumers about the harms and dangers that may result from the use and sale of counterfeited or pirated products.

4. Current anti-counterfeiting and anti-piracy strategies that have proven successful, and those that have not. Information relating to targets of anti-counterfeiting and anti-piracy efforts, such as ecommerce platforms, physical markets and social media.

5. Anticipated challenges in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, and how to address those challenges.

6. Observed patterns and trends in counterfeiting and piracy during the COVID-19 pandemic. An indication of whether the commenter anticipates that such patterns and trends will continue post-pandemic.

7. Patterns and trends observed in counterfeiting and piracy due to shifts in the economy. An indication of whether the commenter anticipates that such patterns and trends will continue and if so, an explanation regarding the expected impact on current and future strategic plans to combat counterfeiting and piracy.

8. The commenter’s thoughts on whether any strategic plans to combat counterfeiting and piracy might include collaboration with private or public parties. If a strategic plan is not collaborative, why not? If collaborative, a discussion of the anti-counterfeiting and anti-piracy strategies employed in the collaboration.

9. New collaborative efforts contemplated to combat counterfeiting and piracy and factors that will affect implementation decisions. Discussion of how future collaborations might be composed.

10. Effective technologies to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, such as counterfeit product identification devices or advanced algorithms to secure supply chains and provide the identity of counterfeit goods online. A discussion of how anticipated strategies will improve an overall anti-counterfeiting and anti-piracy strategy.

11. How online enforcement activities intersect with trademark and copyright laws or procedures. Do online enforcement strategies include employing existing trademark laws to combat online counterfeiting? Do online enforcement strategies use existing copyright laws to combat online piracy? If so, describe these activities and suggestions for maximizing these practices.

12. Description of any fraudulent documentation or materials observed in the furtherance of online counterfeiting and piracy activity. For example, comment on whether, after reporting an infringement to a platform, a counter-notification was attached [...]

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Common Sense: Nonparties Not Precluded by Ex Parte Reexamination Termination

by Brennen Baylor | Jun 8, 2023 | Trademarks

In a precedential decision, the US Patent & Trademark Office (PTO) Trademark Trial & Appeal Board denied a motion for judgment based on either claim or issue preclusion, and in the alternative for a show cause order, in a challenger’s petition. Common Sense Press Inc. d/b/a Pocket Jacks Comics v. Ethan Van Sciver and Antonio J. Malpica, Cancellation No. 92075375, 2023 BL 171365 (TTAB May 19, 2023) (Wellington, Pologeorgis, English, ATJs).

Common Sense Press filed a petition to cancel the registration for the mark “Comics Gate” for comics. In its petition, Common Sense asserted claims of nonuse, abandonment and fraud. The Respondents denied the allegations in the petition and also raised unclean hands by petitioner as a defense.

Common Sense also requested reexamination of the “Comics Gate” mark, which the PTO Director instituted on May 9, 2022. The cancellation proceeding was suspended pending the outcome of the reexamination. The Respondents were instructed to submit evidence to establish use of their mark for comics as of the August 13, 2020, deadline for filing a statement of use, as required under Section 1(d) of the Lanham Act.

The Respondents’ Section 1(d) statement showed that the “Comics Gate” mark was used in connection with comics sales in interest commerce and that such comics were provided via interest trade channels during the relevant period. In view of the Respondents’ evidence, the PTO Director determined that use had been demonstrated for comics and terminated the reexamination.

With the Notice of Termination in hand, the Respondents requested that the Board enter judgment in their favor in the cancelation proceeding as to nonuse and abandonment based on issue preclusion or, in the alternative, issue a show cause order to Common Sense as to why judgment should not be entered against them.

The Board denied the Respondents’ request, reasoning that termination of a reexamination proceeding does not preclude future nonuse challenges. Nor does such a reexamination termination decision have preclusive effect on a petitioner seeking cancellation, even if the petitioner requested the terminated reexamination. Citing due process concerns, the Board explained that the termination of an ex parte reexamination proceeding in which the petitioner necessarily does not participate may not serve as a basis for preventing the petitioner from raising even identical challenges in another action. The Board further noted that while the applicable statute “contains explicit estoppel provisions that bar the filing of future expungement or reexamination proceedings as to the identical goods or services once a proceeding of the same kind has been instituted . . . neither the statute nor regulations set forth a limitation on any party’s ability to petition to cancel a registration just because it is or has been the subject of a reexamination or expungement proceeding.” Thus, the Board concluded there is no basis to issue a show-cause order to a litigant who never appeared in a prior action.

Practice Note: This case serves as a reminder of the metes and bounds of an ex parte reexamination or expungement proceeding. Although [...]

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Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

by Eleanor B. Atkins | Jun 1, 2023 | Trademarks

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury that would be proximately caused by the registration of the mark. Rebecca Curtin v. United Trademark Holdings, Inc. (TTAB May 4, 2023) (Adlin, Lynch, Bunn, ATJs.)

Rebecca Curtin, a trademark law professor, has purchased various toys for her daughter. Curtin filed an opposition to United Trademark Holdings’ (UTH) application to register RAPUNZEL for use in connection with “dolls; toy figures.” Curtin alleged that RAPUNZEL fails to function as a trademark and is generic (or merely descriptive) of the identified goods and that UTH committed fraud. Curtin lamented that competition would be impeded if “private companies are allowed ‘to trademark the name of a famous fairytale character in the public domain,’” which would likely force consumers to pay higher prices for the relevant goods. Curtin also stated that allowing this registration “could chill the creation of new dolls and toys by fans of the Rapunzel fairytale, crowding out the substantial social benefit of having diverse interpreters of the fairytale’s legacy.”

More than four years ago, the Board denied UTH’s motion to dismiss, finding that Curtin had standing by relying on a case from 1999 that addressed the Trademark Act’s bar to registration for “immoral” or “scandalous” marks. Months after the Board’s initial decision, however, the Supreme Court ruled in Iancu v. Brunetti that the portion of the Trademark Act barring registration for “immoral” or “scandalous” marks was unconstitutional, and updates were issued on the “standard for determining whether a party is eligible to bring a statutory cause of action.”

A plaintiff has standing to oppose registration of a mark “when doing so is within the zone of interests protected by the statute and [opposer] has a reasonable belief in damage that would be proximately caused by registration of the mark.” Here, the Board explained that the statute at issue was the Trademark Act, which identifies its interest as regulating commerce and protecting plaintiffs with commercial interests: “[A] mere consumer that buys goods or services is not under the Trademark Act’s aegis.”

Moreover, Curtin failed to demonstrate that an injury would result from registration of the mark. The Board was unconvinced by Curtin’s explanations of the potential harm to competition and resulting higher prices for consumers, stating that the “allegations of damage are [] too remote, because the alleged damage to Opposer depends first on the alleged effect of registration on other commercial doll markets or sellers.” The Board, therefore, dismissed the opposition.

Well Runs Dry: Summary Judgment Denial Supports Non-Exceptional Case Finding

by Amol Parikh | Jun 1, 2023 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees, explaining that when a district court denies summary judgment and allows a plaintiff’s case to proceed, the district court effectively determines that the position of the party opposing summary judgment is not objectively baseless. OneSubsea IP UK Limited v. FMC Techs, Inc., Case No. 22-1099 (Fed. Cir. May 23, 2023) (Moore, Clevenger, Dyk, JJ.)

OneSubsea and FMC compete in the subsea oil and gas exploration and extraction industry. In March 2015, OneSubsea filed a lawsuit against FMC alleging infringement of 95 claims across 10 OneSubsea patents. After the district court issued its claim construction ruling, FMC moved for summary judgment of noninfringement. OneSubsea opposed. While the summary judgment motion was pending, the Patent Trial & Appeal Board instituted inter partes review (IPR) proceedings on a subset of the asserted patents. FMC argued that while a stay of district court proceedings would be appropriate, it was unnecessary in light of its pending summary judgment motion. In August 2016, the district court denied summary judgment and stayed the case.

The case remained stayed for three years, during which time the Board invalidated 76 claims. In 2019, the district court lifted the stay. At a pre-trial hearing in 2020 discussing whether additional discovery was needed to address summary judgment, FMC doubted the need for more discovery and pointed to the 3,200 record pages illustrating differences between the designs of the accused device and the patented devices. In response, the district court stated, “And you really think I’m going to be able to grant summary judgment on that?” After the hearing, FMC renewed its summary judgment motion, which OneSubsea opposed. In reply, FMC moved to exclude the report of OneSubsea’s expert because he applied the wrong claim construction. Ultimately, the district court granted FMC’s motion to exclude and its motion for summary judgment.

In 2021, FMC moved for attorneys’ fees based on OneSubsea’s “substantively weak infringement claims” after the claim construction order was issued and “litigation misconduct.” After briefing was complete, the district court announced that the case had been reassigned to another judge following the retirement of the original assigned judge. The new judge rejected FMC’s view that OneSubsea’s case was objectively baseless and further rejected FMC’s claims of litigation misconduct. FMC appealed.

As a threshold matter, FMC argued that the Federal Circuit should apply de novo review instead of an abuse-of-discretion standard because the new judge only briefly “lived with the case” and should be disqualified from exercising discretion in deciding FMC’s attorneys’ fees motion. The Court rejected FMC’s invitation to change the standard of review, citing the substantial body of law in which appellate courts have consistently reviewed successor judges’ decisions on discretionary issues for abuse of discretion.

Turning to the merits, the Federal Circuit found that FMC’s exceptional case argument lacked merit. The Court explained that the argument disregarded the district court’s observation that FMC’s demand for a prompt favorable noninfringement judgment based [...]

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Heart-to-Heart on Reduction to Practice: When It Comes to Testing, How Much Is Enough?

by Thomas DaMario | Jun 1, 2023 | Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that the patent owner successfully demonstrated that the claimed heart catheter invention was conceived and reduced to practice prior to the effective date of the reference, by record evidence of adequate testing to demonstrate that the invention would work for its intended purpose. Medtronic, Inc. v. Teleflex Innovations S.Á.R.L., Case Nos. 21-2356; -2358; -2361; -2363; -2365 (Fed. Cir. May 24, 2023) (Moore, C.J.; Lourie, J.) (Dyk, J., dissenting).

Teleflex Innovations owns five patents directed to guide extension catheters that use a tapered inner catheter that runs over a standard coronary guidewire to reduce the likelihood that a guide catheter will dislodge from the coronary artery’s opening. All of the patents are related and share a common specification. Around the time of the challenged patents’ priority date, the applicant was working to develop two commercial variants of similar technology: the “rapid exchange” (or “RX”) version of the GuideLiner product, which Teleflex claims practices the challenged patents, and an “over-the-wire” (or “OTW”) variant, which does not practice the challenged patents.

Medtronic petitioned for inter partes review (IPR), challenging all five patents on the basis that they were predated by a patent to Itou. During the IPR proceedings, Teleflex claimed that conception and reduction to practice occurred prior to Itou’s priority date and submitted several declarations and exhibits such as lab notebooks, internal company memoranda, presentations, invoices, sales orders, photographs, engineering drawings and documents from outside patent counsel in support of its contentions. Ultimately, the Board found that Itou did not constitute prior art and therefore Medtronic had failed to demonstrate that the challenged claims were unpatentable. Medtronic appealed.

On appeal, Medtronic did not challenge conception but argued that the Board’s findings on actual reduction to practice and reasonable diligence toward constructive reduction to practice should be reversed. To establish an actual reduction to practice, the patent owner must show that the inventors constructed an embodiment that met all the limitations of the claimed invention and determined that the invention would work for its intended purpose. Medtronic’s arguments were based on the grounds that the Board erred in three ways:

Incorrectly identifying the intended purpose of the claimed invention
Not requiring comparative testing to demonstrate that the invention worked for that purpose
Relying solely on uncorroborated inventor testimony.

On the first issue, Medtronic argued that the Board incorrectly found an over-broad intended purpose of the claimed invention by relying too heavily on extrinsic evidence. The Federal Circuit acknowledged that while “the patents themselves are the most important” evidence, “it is appropriate to consider extrinsic evidence, particularly when it does not contradict the patents themselves.” The Court went on to conclude that the intended purpose here was broader than the narrow purpose argued by Medtronic (relating to difficult occlusions)—“[t]he very title of the patents themselves, ‘Coaxial Guide Catheter for Interventional Cardiology Procedures,’ describes the purpose of the claimed inventions, and it is undisputed that the [...]

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Neither Narrow Proposed Claim Construction nor Work Product Claim Justify Withholding Material Factual Information

by Cecilia Choy, Ph.D. and Hannah Hurley | Jun 1, 2023 | Patents

The Patent Trial & Appeal Board of the US Patent & Trademark Office (PTO) canceled all challenged claims across five patents because the patent owner failed to meet its duty of candor by selectively and improperly withholding material information that was inconsistent with its patentability arguments. Spectrum Solutions, LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847; -00850; -00854; -00857; -00860 (PTAB May 3, 2023) (Braden, Yang, Derrick, Pollock, APJs) (per curiam) (Braden, APJ concurring).

The Board instituted inter partes reviews (IPRs) against five Longhorn patents based on petitions filed by Spectrum. During the proceedings, Longhorn filed motions to amend, after which the Board issued preliminary guidance suggesting that Spectrum established a reasonable likelihood that the proposed substitute claims were unpatentable. Longhorn engaged Assured Bio Labs (ABL) to conduct biological testing that would support its arguments distinguishing a prior art reference, but Longhorn made attorney work product objections in Spectrum’s ABL depositions and withheld testing data inconsistent with its arguments on the patentability of the original and proposed substitute claims. The Board subsequently allowed additional questioning on certain ABL testing, after which Spectrum filed a motion for sanctions, requesting judgment against Longhorn, a finding that the prior art reference taught the claim limitations and precluding Longhorn from contesting the finding, and an award to Spectrum of compensatory expenses, including attorneys’ fees.

The Board determined that sanctions of adverse judgment as to all challenged claims was appropriate because Longhorn failed to meet its duty of candor and good faith. The Board explained that parties have a duty of candor and good faith before the Board that requires any factual contentions to be well supported by evidence. Parties have “a duty to disclose to the [PTO] all information known . . . to be material to patentability.” (37 C.F.R. §1.56(a).) Information is material to patentability when it is “not cumulative to information already of record or being made of record in the application and . . . it refutes, or is inconsistent with, a position the applicant takes in . . . asserting an argument of patentability.” Taking a position contrary to any known fact while shielding factual information from the Board violates the duty of candor and good faith to the PTO, even if the party may otherwise withhold the information as being immaterial to patentability or privileged.

The Board criticized Longhorn’s proposed claim constructions as too narrow and contrary to the express language in both the original and proposed substitute claims. The Board explained that although Longhorn was free to maintain arguments grounded on Longhorn’s claim constructions, that did not excuse Longhorn’s duty of candor and good faith dealing, including disclosing material information relating to the Board’s preliminary claim constructions. Longhorn could not “simply withhold information” that the PTO would find material to patentability and should instead contest the Board’s constructions at trial.

The Board also explained that Longhorn took an overly strict view of what was material to claim patentability and a lax view as to the duty of candor [...]

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PTO Proposes Trademark Fee Increases

by Amol Parikh | May 25, 2023 | Trademarks

On May 8, 2023, the US Patent & Trademark Office (PTO) announced proposed trademark fee increases. The proposed fee increases are the result of lower revenue than previously forecasted and higher-than-expected inflation. Aggregate PTO operating costs are projected to exceed aggregate fee revenue beginning this fiscal year.

To encourage efficient application filing behaviors, enhance the quality of incoming applications and improve processing efficiencies, the PTO proposed a new single basic application filing fee with additional premium application surcharge fees based on the following actions an applicant can take (or avoid) when filing:

Submitting incomplete applications (other than applications denied a filing date for failure to satisfy the requirements under 37 CFR § 2.21)
Providing custom descriptions of goods and services in the free-form field instead of using the preapproved drop-down fields containing acceptable identifications of goods and services from the Trademark Next Generation ID Manual
Providing excessively long identifications of goods or services when using the free-form field.

The PTO proposes a 12% fee increase per class for applications (paper submission) and a 40% fee increase per class for a basic application (formerly TEAS Plus). Proposed fee increases for intent-to-use (ITU) filings include 100% per class for an amendment to allege use (AAU), 50% per class for an AAU (paper submission), 50% per class for a statement of use (SOU) and 25% per class for an SOU (paper submission). The fee for a fourth and subsequent request for a six-month extension per class for filing an SOU would increase 100% and 56% per class for an SOU (paper submission).

Proposed fee increases for renewals include 17% per class for § 9 registration renewals, 10% per class (paper submission) and 17% for renewals filed at the World Intellectual Property Organization (WIPO).

The proposed fee increase for a Letter of Protest (LOP) would be 400%, and a petition to the director would increase 60% and 43% (paper submission). Petitions to revive an application would increase 67%, and petitions to revive (paper submission) would increase 40%.

Proposed fee increases for declarations of use include 33% per class for § 8 declarations and § 71 declarations, and 23% for paper submission. Section 15 declarations of incontestability would increase 25% per class and 17% per class (paper submission).

A hybrid public hearing is scheduled for June 5, 2023. Those wishing to present oral testimonies at the hearing must submit a written request by May 26, 2023. Written comments on the proposed fees will be accepted until June 12, 2023. The PTO anticipates that the fee changes will be implemented around November 2024.

For further details, including a complete list of the proposed fee increases, see the latest trademark fee setting information on the PTO website.

No Extra Life: Harmless Claim Construction Error Does Not Restart Invalidity Challenge

by Christian Tatum | May 18, 2023 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision, finding that under the harmless error rule, the challenged claims were invalid as obvious even if the Board erred in claim construction. Bot M8 LLC v. Sony Interactive Entertainment LLC, Case Nos. 22-1291 (Fed. Cir. May 9, 2023) (Prost, Reyna, Cunningham, JJ.).

Bot M8 owns a patent related to a gaming machine that authenticates certain data and includes both a board and a motherboard. The independent claims require that a “game program” is stored in memory on the board and written to the motherboard only after the game program has been authenticated by a central processing unit (CPU) on the motherboard (the Write Limitation). Sony Interactive Entertainment petitioned for inter partes review (IPR). Ultimately, the Board determined that the challenged claims were unpatentable as obvious. Bot M8 appealed.

The issue presented to the Federal Circuit was what data the Write Limitation precludes from being written to the motherboard prior to authentication: (1) the entire game program, (2) any portion of the game program and/or (3) any data (including data not related to the game program). It was undisputed that the claims at minimum preclude writing the entire game program to the motherboard before authentication (option 1). Both the Board and the Court rejected Bot M8’s argument that would preclude writing any data whatsoever before authentication (option 3). The question thus resolved into whether the Write Limitation also precluded writing any portion of the game program prior to authentication (option 2). Bot M8 argued that it did.

Bot M8 focused on a statement made by the Board as indicative that the Board applied an erroneous claim construction that would allow a portion of the game program to be written prior to authentication (rejecting option 2): “[Bot M8] seeks to read into claim 1 a requirement that nothing related to, or any portion of, the gaming information be read into [the motherboard’s] RAM … prior to authenticating the game program.”

The Federal Circuit rejected Bot M8’s argument, finding that even if the Board erred in construing the claim, Bot M8 failed to demonstrate that the alleged error was harmful. Specifically, the Court found that any such error was harmless because the Board never needed to apply an improper construction since it found the prior art disclosed writing only non-game program data prior to authentication, a protocol that both the Board and the Court found was not precluded by the Write Limitation. Deeming the Board’s potential claim construction error harmless, the Court affirmed the Board’s invalidity determination.

Practice Note: Parties seeking to appeal a Board decision based on an improper claim construction theory should demonstrate how the Board’s error resulted in harm.

Blunt Rejection of Attorney Fees in Stipulated Dismissal

by Lillian Spetrino | May 18, 2023 | Patents

The US Court of Appeals for the Federal Circuit affirmed the rejection of attorney fees, finding that neither inequitable conduct nor a conflict of interest rendered the case exceptional given the limited factual record following a stipulated dismissal in a patent case. United Cannabis Corp. v. Pure Hemp Collective Inc., Case No. 22-1363 (Fed. Cir. May 8, 2023) (Lourie, Cunningham, Stark, JJ.).

United Cannabis Corporation (UCANN) sued Pure Hemp for patent infringement. After the litigation was stayed pending bankruptcy proceedings, the parties stipulated to the dismissal. Pure Hemp then sought attorney fees based on alleged inequitable conduct by UCANN during prosecution of the asserted patent due to nondisclosure of a prior art reference used in the patent’s specification and based on a purported conflict of interest by UCANN’s litigation counsel. The district court denied Pure Hemp’s request, finding that the case was not exceptional. Pure Hemp appealed.

Pure Hemp argued that the district court erred by (1) failing to find Pure Hemp to be the prevailing party in the litigation, (2) not concluding that the undisputed facts established inequitable conduct and (3) not recognizing that UCANN’s attorneys had a conflict of interest.

The Federal Circuit found that although the district court erred in not finding Pure Hemp to be the prevailing party, this was a harmless error. The Court explained that by fending off UCANN’s lawsuit with a stipulation dismissing UCANN’s claims with prejudice, Pure Hemp is a prevailing party under § 285. However, the Court concluded that this error was harmless because the district court ultimately concluded that this case was unexceptional.

The Federal Circuit found Pure Hemp’s arguments on inequitable conduct without merit. The Court explained that it had no findings to review because Pure Hemp voluntarily dismissed its inequitable conduct counterclaim and did not seek any post-dismissal inequitable conduct proceedings. Although Pure Hemp argued that it could prevail based on the undisputed facts in the record, the Court disagreed. It explained that even the limited record demonstrated at least a genuine dispute as to both the materiality and intent prongs of inequitable conduct and, therefore, the district court properly determined that Pure Hemp did not demonstrate that this case was exceptional.

The Federal Circuit also rejected Pure Hemp’s argument that copying and pasting portions from the prior art in the patent’s specification (but not disclosing the same prior art references) was inequitable conduct. The Court explained that unlike the nonbinding cases Pure Hemp relied on, the district court here did not find that the copied prior art was material, and the record gave no reason to disbelieve the explanation provided by UCANN’s prosecution counsel. The Court was also unpersuaded by Pure Hemp’s arguments to support inequitable conduct, explaining that the Court was not free to make its own findings on intent to deceive and materiality and, further, the district court was not required to provide its reasoning for its decision in attorney fee cases.

As to Pure Hemp’s argument that the case was exceptional because UCANN’s attorneys [...]

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